Registered business name but no trademark

[latin_sydney]

Hi Guys,

My client wants to rank for the keyword "suburb + keyword" (Sydney + Futsal). (keyword changed for Privacy Reasons)

My client runs a futsal club in Sydney (futsal is another name for indoor soccer)

We dominate the keyword (Sydney Futsal) with 4+ organic listings on the 1st page of google and then my client received an email from an the owner of another futsal club in Sydney stating the following.

"Hi XXXX,

It has come to my attention that you are now advertising your business as Sydney Futsal.

Sydney Futsal is our registered business name, and has been since we started our football operations.

You have always been known as XXXen Goal, XXdale PCYC or XXXBay PiraXX. So why now the reference to "Sydney Futsal" ?

You have until 5pm tomorrow, the 16 October, 2013, to remove all reference to Sydney Futsal from your website and any other advertising or media, or we will begin legal action against you"

The other club has a registered business name but no trademark on the keywords Sydney Futsal.

Does anyone know if my client is in the wrong and should remove this??? The keyword Sydney Futsal is a registered business name but not a trademark.

To me this term "Sydney Futsal" seems to be very broad my client is not trying to act as if he were the other futsal club , its a seperate bussines which happens to be in the same suburb and are competing for the same junior futsal players


Does anyone have any insight on this?

Thanks : )

 

[phpdev]

Never heard of Futsal, but doing a quick search http://en.wikipedia.org/wiki/Futsal shows that it is a generic term for a sport, so using the domain name with the pattern Geographic location + Sport name, appears to be very broad and generic use.
I think anyone trying to register a trademark for this would have very very little chance of success. Very similar to using SydneyDentist com.au or BrisbaneSoccer com.au - fitst in first served.

 

[latin_sydney]

this is what Im thinking, if a word is generic and very broad, there can be no trademark rights.(in this case not a trademark exists) My client has a legitimate business purpose for the use of the keyword phrase and his futsal club is residing wholly in Sydney.

If the other futsal club chooses to sue, I'm afraid for my client that the case will be be buried in legal costs.

thanks phpdev

 

[zhenjie]

You have nothing to worry about. Typical bluff from an annoyed competitor.

 

[latin_sydney]

update..

In the spirit of mutual cooperation and the avoidance of litigation I have changed the very broad and generic use of the phrase "Sydney Futsal" to "Sydney District Futsal" in my client's website but this was not acceptable from the other party and wants to proceed with litigation.

I'm doing this in good faith in the process and the goal of reaching a solution.

Does my client need legal representation?

 

[latin_sydney]

update..

In the spirit of mutual cooperation and the avoidance of litigation I have changed the very broad and generic use of the phrase "Sydney Futsal" to "Sydney District Futsal" in my client's website but this was not acceptable from the other party and wants to proceed with litigation.

I'm doing this in good faith in the process and the goal of reaching a solution.

Does my client need legal representation?

 

[petermeadit]

I would be worth hearing some advice from a trademark or domain lawyer, to be sure about your options. I am not qualified to give any legal advice, so here is just some things that I would ask more about if I were you.

The bit where they say "You have until 5pm tomorrow, the 16 October, 2013, to remove all reference to Sydney Futsal from your website and any other advertising or media, or we will begin legal action against you" Sounds like a threat. If they said "...14 days to remove any keywords that infringe on our trademarks..." or something to that effect. Otherwise, it looks like a legal battle over generic terms.

Also if you do a business name search for 'Sydney Futsal' on ASIC website, you will see 6 name variants registered, but not the exact term. ASIC may also have restrictions as to if this exact term can be registered or not. But, my understanding is that the trademark is most important in these cases.

Worth getting some legal advice to be sure.

 

[johno69]

BrisbaneSoccer com.au

Now that's a nice domain.

 

[Cooper Mills DomainLawyer]

quite often it is a bad idea to change your use of a term as it may be an admission that you are in the wrong. It is always best to get advice from a trade mark lawyer who understands these matters - BEFORE doing anything.

 

[Simon Johnson]

If you are using the name for a legitimate business and can demonstrate a close and substantial connection, you shouldn't have a problem.

 

[Shane]

@Erhan & Simon - I think the OP is referring to a keyword phrase, not an actual domain name.

 

[Rhythm]

From ASIC site

Having a registered business name does not give you ownership of the name or the exclusive right to use the name.

Registering a business name:
does not stop another person from registering a similar name

will not prevent the name being registered as a trademark

will not prevent the name being used by someone that has already registered it as a trademark,

and does not protect you from legal action if the name of your business infringes the intellectual property rights of another (for example, a name which is a registered trademark).

The obligation to register a business name is a legal obligation which is entirely separate to any steps that business owners may take to protect any intellectual property rights in a name or brand, such as registering a trademark.*

http://www.asic.gov.au/asic/asic.nsf/byHeadline/Registering a business name

 

[James]

My advice would be to have Erhan from Cooper Mills send an email to this business and or pay for some of his expert advice.

A email from a lawyer will be an indication that you are serious and they clearly have no idea what they are talking about.

Some one tried to bully me over a domain name recently and the tone changed very quickly they they received an email from Erhan.

 

[snoopy]

A registered business name doesn't mean much. Personally wouldn't be very worried about this.

Since it sounds like there is no prospect of selling them anything I wouldn't I wouldn't spend a dime on this unless they are serious about legal action. Sounds like the business owner has emailed you.....amateur hour.

 

[latin_sydney]

Thanks guys for such a positive and encouraging feedback,

After speaking to a couple of IP lawyers and reporting back to my client, my client got scared over this bullying email and has decided to remove any reference of the term (Sydney + Futsal) I have done as asked and the matter is finished and I'm moving on to the next project.

I'm F***ing pissed that someone can claim ownership of a generic broad descriptive keyword in the serps just because they are scared of a little competition.

 

[zhenjie]

The IP lawyers supported this action to remove the references to a generic term?

 

[findtim]

The IP lawyers supported this action to remove the references to a generic term?

I'm F***ing pissed that someone can claim ownership of a generic broad descriptive keyword in the serps

anyone can threaten to sue and then sue anyone with absolutely now reason and we have to then act, its a bulls^*t system.

I have MANY 2 word generics and I would have just said "go away" if I even decided to reply.

but do note, changing your site as mentioned is not a good thing during the process, if it did go further a few screenshots could really harm your case.

obviously the guy is pissed off with himself for not thinking of what your guy did !!!

and that deadline is stupid.

tim

 

[latin_sydney]

The advice I got was this issue has very little chance of winning or even going to court at all because the term "St George Futsal" is very broad and generic phrase and that its laughable to try claim it as their own. In other words they have very little chance of wining if it goes to court at all.

The IP lawyers supported this action to remove the references to a generic term?

 

[petermeadit]

I can see why your client backed down. I guess next time you start getting good search rankings again, you may be better prepared when a competitor tries to play hardball again.

Best of luck.


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